USPTO Patents Application 08873597

UNITED STATE? DEPARTMENT OF COMMERCE
Patent and Trademark Office

Address: COMMISSIONER OF PATENTS AND TRADEMARKS
Washinaton. DC 20231

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

08/873,597

06/12/97

KAYYEM

A-64558-1/RF

r

HM3 1/0930

ROBIN M SILVA

FLEHR HOHBACH TEST ALBRITTQN & HERBERT
FOUR EMBARCADERO CENTER
SUITE 3400

SAN FRANCISCO CA 94111-4187

H C

L

EXAMINER

HOUTTEMAN, S

ART UNIT

1634
DATE MAILED:

PAPER NUMBER I

9

09/30 /9c

Please find below and/or attached an Office communication concerning this application or
proceeding.

Commissioner of Patents and Trademarks

PTO-90C (REV. 2/9S)

S.GOVE RNMENT PRINTING OFFICE 1995-319-826

Application No.
08/873,597

Applicant(s)

Kayyem

Office Action Summary

Examiner

Group Art Unit
1634

Scott W. Houtteman

H Responsive to communication(s) filed on Aug 21, 1998 .

□ This action is FINAL.

□ Since this application is in condition for allowance except for formal matters, prosecution as to the merits is closed
in accordance with the practice under Ex parte Quayle, 1935 CD. 11; 453 O.G. 213.

A shortened statutory period for response to this action is set to expire three month(s), or thirty days, whichever
is longer, from the mailing date of this communication. Failure to respond within the period for response will cause the
application to become abandoned. (35 U.S.C. § 133). Extensions of time may be obtained under the provisions of
37 CFR 1.136(a).

Disposition of Claims

K Claim(s) 1-25 is/are pending in the application.

Of the above, claim(s) 1-18 is/are withdrawn from consideration.

□ Claim (s) is/are allowed.

C3 Claim(s) 19-25 is/are rejected.

□ Claim (s) is/are objected to.

□ Claims are subject to restriction or election requirement.

Application Papers

□ See the attached Notice of Draftsperson's Patent Drawing Review, PTO-948.

□ The drawing(s) filed on is/are objected to by the Examiner,

□ The proposed drawing correction, filed on is Qpproved Disapproved.

□ The specification is objected to by the Examiner.

□ The oath or declaration is objected to by the Examiner.

Priority under 35 U.S.C. § 119

□ Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d).

□ All □ Some* □ None of the CERTIFIED copies of the priority documents have been

□ received.

□ received in Application No. (Series Code/Serial Number) .

□ received in this national stage application from the International Bureau (PCT Rule 17.2(a)).

*Certified copies not received:

□ Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 1 19(e).

Attachment(s)

Kl Notice of References Cited, PTO-892

Kl Information Disclosure Statement(s), PTO-1449, Paper No(s). 4 and 6

□ Interview Summary, PTO-413

□ Notice of Draftsperson's Patent Drawing Review, PTO-948

□ Notice of Informal Patent Application, PTO-152

— SEE OFFICE ACTION ON THE FOLLOWING PAGES —

U. S. Patent and Trademark Office

PTO-326 (Rev. 9-95)

Office Action Summary

Part of Paper No. ®

Serial No. 08/873,597 -2-
Art Unit 1634

1 . Applicant elects, without traverse, Group 2, claims 1 9-25 in the response filed 8/21/98.
Claims 1-18 are withdrawn from further consideration by the examiner. See 37 CFR 1.142(b).

2. Claims 19-25 are rejected under 35 U.S.C. § 1 12, second paragraph, as being indefinite
for failing to particularly point out and distinctly claim the subject matter which applicant regards
as the invention.

a. There are two recitations of "covalently attached" in claims 19 and 20. It is unclear
whether there are two distinct attachments or only one. For example, claim 19 recites "a
covalently attached conductive oligomer covalently attached to . . . It may be that there are
two attachments: one between the conductive oligomer and some unspecified support and another
between the conductive oligomer and the single stranded nucleic acid. Alternatively, the two
recitations of "covalent attachment could be referring to the same attachment. Clarification is
required.

b. Claim 23 is indefinite in the recitation of "said electrode." There are two electrodes in
the apparatus, a first and second measuring electrode. It is unclear to which electrode claim 23
refers.

c. Claim 25 is indefinite in the recital of "when g is zero, e is 1 and D is preferably. . .".
First, the word "preferably" is unclear in this context. It is unclear whether this word is meant to
impart some greater scope because certain embodiments are preferred, perhaps due to some
greater scope of enablement. If this is not the case it is suggested that this word be deleted.

Second, it is unclear whether the definition of D is contingent on g being zero. On the one

Serial No. 08/873,597 -3-
Art Unit 1634

hand, since "when g is zero" leads off this section of the claim one would assume that everything
within this section, including the definition of D, is contingent on g being zero. Unfortunately, the
claim allows g to be either zero or one and there is no definition of D when g is 1.

Another possibility is that "when g is zero" applies only to "e" and not to "D." The
condition "g is zero"merely means that "e is 1." The definition of D is independent of the
definition of g. Clarification is requested.

3. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
basis for the rejections under this section made in this Office action:

A person shall be entitled to a patent unless —

(e) the invention was described in a patent granted on an application for patent by another filed in the United
States before the invention thereof by the applicant for patent, or on an international application by another who
has fulfilled the requirements of paragraphs (1), (2), and (4) of section 371(c) of this title before the invention
thereof by the applicant for patent.

Claims 19-25 are rejected under 35 U.S.C. 102(e) as being anticipated by Ribi et al., US
Pat 5,571568 (1 1/1996) filed 6/1995, effective filing date 6/15/89 (Ribi).

Ribi discloses an apparatus comprising a conductive oligomer, see for example col. 8, line
63 to column 9, line 7; including the heteroatom, nitrogen, see for example "amides, amino, etc,"
col. 4, lies 40-46.

4. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness
rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at the time the invention was made to a person

•

Serial No. 08/873,597

-4-

ArtUnit 1634

having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
manner in which the invention was made.

5. Claims 19-25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Ribi. In
addition to the embodiments which are anticipated by Ribi, claim 19-25 encompass limitations
such as "an AC/DC voltage source, for examle capable of delivering 1 Hz to 100 kHz frequencies
and a processor coupled to the electrode.

It would have been prima facie obvious to one of ordinary skill in the art at the time the
invention was made to combine the Electronic elements of Ribi, see for example the section
starting on col. 9, line 65, with components common to electronic equipment, appropriate power
supplies and data displays.

6. Papers relating to this application may be submitted to Technology Center 1600 by
facsimile transmission. The faxing of such papers must conform with the notice published in the
Official Gazette, 1096 OG 30 (November 15, 1989). The Technology Center 1600 Fax numbers
are (703) 305-3014 and 308-4242.

Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Scott Houtteman whose telephone number is (703) 308-3885. The
examiner can normally be reached on Tuesday-Friday from 8:30 AM - 5:00 PM. The examiner
can also be reached on alternate Mondays.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor,
W. Gary Jones, can be reached at (703) 308-1 152.

Any inquiry of a general nature or relating to the status of this application should be
directed to the Technology Center receptionist whose telephone number is (703) 308-0196.

Scott Houtteman
September 30, 1998

SCOTT W. HOUTTEMAN
PRIMARY EXAMINER